Appeal No. 2002-0699
Application No. 09/401,740
of obviousness. E.g., In re Woodruff, 919 F.2d at
1578, 16 USPQ2d at 1936-37(concluding that a claimed
invention was rendered obvious by a prior art reference
whose disclosed range (“about 1-5%” carbon monoxide)
abutted the claimed range (“more than 5% to about 25%”
carbon monoxide)); In re Malagari, 499 F.2d at 1303,
182 USPQ at 553(concluding that a claimed invention was
rendered prima facie obvious by a prior art reference
whose disclosed range (0.020-0.035%) overlapped the
claimed range (0.030-0.070% carbon)); See also In re
Geisler, 116 F.3d at 1469, 43 USPQ2d at 1365
(acknowledging that a claimed invention was rendered
prima facie obvious by a prior art reference whose
disclosed range (50-100 Angstroms) overlapped the
claimed range (100-600 Angstroms)).
Accordingly, we conclude that Takazawa alone would have rendered
the viscosity range recited in claim 3 obvious to one of ordinary
skill in the art within the meaning of 35 U.S.C. § 103.2
We turn next to the examiner’s rejection of claim 6 under 35
U.S.C. § 103 as unpatentable over the combined disclosures of
Takazawa and Tobias. We concur with the appellant that the
examiner has not established a prima facie case of obviousness
for the reasons set forth at page 23 of the Brief. We wish to
emphasize that the examiner has not explained, much less provided
evidence, why one of ordinary skill in the art would have been
led to impart the conductivity level desirable for an ink
2 We need not discuss the content of Nishizaki since
Takazawa alone would have suggested the subject matter of claim
3.
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